Court may refuse to grant injunction in TM infringement case: BHC

The Bombay High Court recently ruled that a court can go into the question of the validity of the registration of the plaintiff’s trade mark at an interlocutory stage and may refuse to grant an injunction when the defendant takes up the defense of invalidity of the registration of the plaintiff’s trade mark in an infringement law suit.

“In cases where the registration of trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. It is, therefore, open to the Court to go into the question of validity of registration of plaintiff’s trade mark for this limited purpose, to arrive at a prima facie finding”, a Full Bench of the Court said.

The Court said that while the registered proprietor of a trade mark would ordinarily be entitled to finding of the Civil Court in its favor that the trade mark registered in its name is prima facie valid, the jurisdiction of the Court is not barred for considering the plea of the Defendant at the interlocutory stage that the registration in the Plaintiff’s favor is so fraudulent or is so apparently invalid that the Court should not grant an injunction in favor of the Plaintiff. Of course, a very heavy burden lies on the Defendant to rebut the strong presumption in favor of the Plaintiff at the interlocutory stage.

“There is nothing in the Trademarks Act to suggest that any different parameters for grant of injunction are required to be applied when a plaintiff seeks injunction on the basis of registered trade mark. The relief of injunction being a relief in equity, when the Court is convinced that the grant of interim injunction would lead to highly inequitable results, Court is not powerless to refuse such relief”, the Court added.

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